Overview

Kathy Ott ensures that software, medical device and pharmaceutical innovations of clients are well protected in the marketplace. With over a decade of experience, Kathy has evaluated thousands of technology patents, drafted scores of opinions of counsel and guided Fortune 50 and other clients in patent portfolio strategy and management. From the inception of the America Invents Act (AIA), Kathy has represented clients in post-grant proceedings.

Patent Analysis

Kathy provides offensive and defensive patent analysis, including product mapping, invalidity claim charting, product clearance, pre-acquisition due diligence, directed prosecution based on a target product or licensing agreement, full-scale non-infringement and invalidity opinions of counsel, and Abbreviated New Drug Application (ANDA) Paragraph IV Certification opinions of counsel.

Patent Preparation and Prosecution

Kathy prepares and prosecutes patents, and counsels clients in patent portfolio management and strategy. Her computer science and software-related subject matter experience includes:

  • Network protocol technologies
  • Artificial intelligence
  • Natural language processing
  • Virtual/augmented/mixed reality display environments
  • Database structure and management
  • Garbage collection and memory allocation management
  • Block-chain technologies
  • Cryptography
  • Productivity suite application features and functionality
  • Graphical user interface features and functionality

Her medical device technology experience includes:

  • Acute-care ventilators
  • Orthopedic fixation devices
  • Spinal implants
  • Ultrasound localization marker technologies
  • Ultrasound liposuction devices and tools
  • Surgical cutting devices and tools

Additionally, she has prosecuted in the chemical field with respect to biofuel production and purification.

Post-Grant Proceedings

Kathy has had repeated success representing clients in post-grant proceedings before the U.S. Patent Trial and Appeal Board (PTAB). Her technologies experience includes remote healthcare monitoring, boron-containing topical pharmaceuticals, particle-enhanced water-permeable textile membranes, and network security.

Personal Interests

Active in the community, Kathy volunteers with Girls, Inc. to inspire and support underprivileged girls in the Denver Metro area through mentoring and educational enrichment. She serves on the Girls, Inc. advisory board for Eureka!, a STEM enrichment program.

Experience

Post-Grant Proceedings

  • Cardiocom LLC v. Robert Bosch Healthcare Sys., Inc., IPR2013-00468, IPR2013-00469 (U.S. Patent No. 7,516,192) (Final Written Decision holding all claims challenged in two petitions unpatentable);
  • Coalition for Affordable Drugs X LLC v. Anacor Pharms. Inc., IPR2015-01776, IPR2015-01780, IPR2015-01785 (U.S. Patent Nos. 7,582,621 & 7,767,657) (Final Written Decisions holding all claims unpatentable for both patents challenged in three petitions) (affirmed on appeal, Anacor Pharms., Inc. v. Iancu, Case 2017-1947 (Fed. Cir. May 14, 2018);
  • VF Outdoor, LLC v. Cocona, Inc., IPR2018-00190 (U.S. Patent No. 8,945,287) (Final Written Decision holding all claims asserted in litigation unpatentable);
  • Cisco Sys., Inc. v. Centripetal Networks, Inc., IPR2018-01443, IPR2018-01444 (U.S. Patent No. 9,137,205) (Both petitions instituted, pending before the PTAB).

Offensive and Defensive Patent Analysis

Kathy has over a decade of experience providing offensive and defensive analyses in the fields of medical device technologies, pharmaceuticals, and computer science and software. Representative projects include:

  • Managed a team of attorneys to conduct pre-acquisition due diligence for one of her clients, resulting in the successful acquisition of the company; the project involved reviewing hundreds of patents, clearing seven distinct product lines, advising on product design-around, and delivering twenty opinions of counsel.
  • One of a select team of attorneys engaged to assess hundreds of patent claim charts supporting a multimillion-dollar software licensing negotiation involving software, hardware, semiconductor & telecommunications.
  • Drafted over 50 claim charts directed to a target product or a licensed technology and performed directed prosecution based thereon.
  • Drafted multiple opinions of counsel supporting Paragraph IV Certification for Abbreviated New Drug Applications (ANDAs) in the area of Orange Book pharmaceuticals.
  • Conducted clearance investigations for multiple product launches, including reviewing thousands of patents and drafting numerous non-infringement or invalidity opinions of counsel.

Patent Preparation and Prosecution

Kathy has over a decade of experience preparing and prosecuting patents, including expertise in a variety of fields. Kathy also counsels clients in patent portfolio management and strategy. For the past nine years she has managed a large prosecution docket in the medical-device field, including both software-related and mechanical innovations, and for the past four years she has managed a quarter of the firm’s large prosecution docket for a fortune-50 software company.

Services & Industries

Credentials

Bar Admissions

Colorado
U.S. Patent and Trademark Office

Education

University of Colorado
B.A. in Molecular, Cellular, and Developmental Biology

University of Denver College of Law
J.D. Order of St. Ives, University of Denver Water Law Review - Editorial Board (2008)

Insights & Events

Other Perspectives
  • Instructor, "Inventor Interviews," Rocky Mountain IP Institute, May 31, 2018
  • Moderator, "The PTO Speaks – Panel of SPEs," Rocky Mountain IP Institute, June 1, 2017
  • Interviewed, Women's Roundtable; Women leaders talk about lacking representation, the ladder to the top and the leaky pipe, Law Week Colorado, April 26, 2017
  • Quoted, "The Concrete Road to Solid Patents," Denver Business Journal, January 27, 2017
  • Quoted, "Federal Circuit: Inter Partes Review Here to Stay," by Doug Chartier, Law Week Colorado, December 21, 2015
  • Moderator, "Current Developments in Inter Partes Review CLE," October 8, 2015
  • “Using IP to Position Your Company for Sale”
    Co-author, with Marianne R. Timm-Schreiber and George C. Lewis, Corporate Counsel, January 13, 2014
  • “Diversity in the Legal Profession”
    Panelist, 8th Annual Microsoft Women and Minority Law Student IP Summit, University of Miami, November 11, 2011
  • “25% Rule Held To Be 100% Wrong”
    Co-author, Law Week Colorado, February 2011
  • Privacy Law in a Nutshell
    Editorial Support, John T. Soma & Stephen D. Rynerson, Thomson West, 2008 

Leadership & Community

Pro Bono

  • Kathy provides pro bono legal assistance to immigrant victims of domestic violence and provides pro bono patent services through ProBoPat.
  • As a Steering Committee member of ProBoPat, she works alongside the U.S. Patent & Trademark Office, Mi Casa Resource Center, and the Colorado Bar Association to promote and guide the Rocky Mountain pro bono patent initiative.

Professional Associations

  • Colorado Bar Association, 2008-present
  • Denver Bar Association, 2018-present
  • Douglas-Elbert County Bar Association, 2008-18

Civic Activities

  • Girls Inc., Eureka! STEM Program — Advisory Committee, 2015-present
  • ProBoPat pro bono patent program — Steering Committee, 2013-present
  • Heart for Africa — Board of Directors, 2014-19

Honors

  • Law Week Colorado — People’s Choice, Best Intellectual Property Lawyer (non-Litigator), 2019
  • IAM Patent 1000 — The World’s Leading Patent Professionals, Colorado, 2019
  • Leadership Council on Legal Diversity (LCLD) — Fellow, 2018-19
  • Denver Business Journal — Finalist, Outstanding Women in Business, 2018
  • The Best Lawyers in America© — Patent Law, 2017-20
  • Law Week Colorado — Top Woman Lawyers, 2015
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